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In re Klein and the “Field of the Invention” August 31, 2011

Posted by Brian Schar in Federal Circuit, Patent prosecution.

In re Klein has been discussed in various fora since it was decided a few months ago.  The purpose of this post isn’t to add to that discussion, but rather to suggest a patent drafting approach that can help when oddball art gets thrown at you in a 103 rejection.

In re Klein relied largely on In re Clay (966 F.2d 656 (Fed. Cir. 1992)), which set out a two-part test for determining the scope of analogous prior art: “(1) whether the art is from the same field of endeavor, regardless of the problem addressed, and (2) if the reference is not within the field of the inventor’s endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved.”  In re Klein primarily dealt with the second prong of this test.  However, the “field of endeavor” is part of both prongs of the test.  Happily, the drafter can take control of what exactly the field of endeavor is by using the “Field of the Invention” section of the application. 

One does not want to be overly limiting in setting forth the “Field of the Invention.”  However, one can limit that description in a useful manner that is not overly limiting as to claim scope.  To provide an example from the medical device industry, consider a stent.  A stent is a complex device that is costly to develop and get approved, and sells for significantly more money than plumbing supplies of the type one would find at Home Depot.  The manufacturer will never compete with plumbing equipment, and will never sue a manufacturer of that equipment.  In such a situation, a restriction of the “Field of the Invention” along the lines of “a structure implantable in a body lumen to facilitate fluid flow through that lumen” doesn’t alter the claim scope in any practical manner.  The salutary effect of such a description of the field of the invention is that, when a reference from 1924 about washing machine hose is cited as prior art, one can point to the Field of the Invention and the first prong of the two-part test of In re Clay and knock out that reference.  Even if you can’t knock it out entirely, it may force the PTO into the second prong of In re Clay, where it must make the more difficult showing that the disclosure of, e.g.,  an 1885 carpentry tool is “reasonably pertinent” to the field of the invention.

I have not battle-tested this strategy, but I plan to as appropriate.  It may be a simple way to make it easier to knock out oddball references that pop up in the course of 103 rejections.


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